Experience

Global Strategy for Chemical, Battery-Related Patent Portfolios

Devised and implemented global strategies for numerous intertwined patent portfolios for chemical and battery-related technologies.

IP Due Diligence for $900 Million Business Acquisition

Handled the IP due diligence for a client that acquired a payments technology company valued at about $900 million.

IP, IT Diligence for $135 Million Acquisition of Animal Health Products Manufacturer

Represented a manufacturer and marketer of pet care and nutrition products in its $135 million acquisition of a wholesaler of small-animal wellness brands. Handled diligence on all intellectual property and information technology aspects of the transaction.

Assisted Small Business Against Aggressive Parties

Advised a client facing a series of disputes. Liaised with defence counsel to head off spurious criminal charges of intellectual property infringement raised by aggressive party, persuaded a third party that an alleged infringement was not worth pursuing, and generally helped protect client from hostilities.

Advised Clients on Computer-implemented Inventions

Assisted multiple clients in obtaining patents for computer-implemented inventions, which have traditionally posed difficulties in prosecution before the European Patent Office.

Represented Clean Energy Client in Growth of Multimillion-Pound IP Portfolio

Represented a domestic client in the field of clean energy, drafting and prosecuting patent applications in the U.K. and internationally. The client has now grown from a small startup to encompass two entities who have received millions of pounds in investment on the strength of their IP portfolio.

Patent and Product Portfolio License

Represented a cable television provider in the license of a comprehensive product and patent license for interactive programming guide technology, in a transaction valued at over $300 million.

Acted in Complex Joint EU Revocation and Invalidation Action Brought by Former Licensees

Acted for one of the world's largest CD and DVD media distributors in a complex joint EU Revocation and Invalidation action brought by its former licensees, which was appealed to the European Court of First Instance (now the General Court) triggering tense settlement negotiations.

Acted in Strategically Important EUIPO Appeal Decision Based on Noncompliance with Underlying Law

Secured a strategically important victory by identifying that the European Union Intellectual Property Office's practice did not comply with the underlying law concerning translations, in a wider commercial dispute, where infringement proceedings had been filed in Germany and client’s business customers had received cease and desist letters directly.

Resort to the Court of Chivalry

When a client found that their coat of arms was being used as a trademark by a competitor, pointed out to competitor that the Court of Chivalry still existed, resulting in the competitor ceasing use of the coat of arms.

IP Due Diligence and Support

Providing due diligence in IP portfolio acquisitions and disposals (ranging from portfolios in the tens to hundreds of properties), including assisting in documentation and subsequent recordal of changes of ownership. Reviews of IP portfolios for small and large clients to assess fitness to support business aims.

External IP Portfolio Manager for Multinational Company

Provided external IP management for a $1 billion+ multinational company for over 10 years, until they opened an internal IP function.

Management of U.S. and Foreign Patent Families for Major Medical Device Companies

Managed multiple U.S. and foreign patent families and provided strategic counsel for medical device companies involving technologies related to fluorescent imaging, vascular occlusion, neuromodulation, and renal and cardiovascular devices.

IP Due Diligence in $3.4 Billion Acquisition of Medical Device Manufacturer

Led IP due diligence for a major medical device company, including in-depth research and analysis of both the target company and its competitors, resulting in our client’s decision to move ahead with its $3.4 billion acquisition of a medical device manufacturer.

EPA Clearance for Large, Global Chemical Producer

Managed multiple EPA clearance searches and analyses for one of the largest international chemical producers in the world.

Successful Chemical Plant Clearance

Cleared all chemical engineering processes and related products for a major chemical plant in the U.S. for one of the largest international chemical producers in the world.

U.S. National Applications for Multibillion-Dollar Foreign Clients

Managed the filing and prosecution of extensive U.S. National (371) applications for a number of multibillion-dollar foreign clients. Armstrong Teasdale represents clients based in China, Japan, Singapore, the United Kingdom, Germany, Australia and many other countries.

Portfolio Management, Strategic Direction for Multiple Consumer Products, Health Care Companies

Managed global patent portfolios for and provided strategic counsel to multimillion-dollar consumer products and health care companies in the U.S. and abroad, including preparation and prosecution, opinion work, Inter Partes Review work and litigation.

Risk Analysis for Use of Celebrity's Name and Likeness in Literary Work

Provided analysis and recommendations regarding liability risk associated with use of a famous celebrity's name and likeness in an original literary work. The project included an in-depth review of the legal concepts of right of publicity, invasion of privacy, misappropriation, false light and defamation.

Filed Trademarks for Retirement Plan Provider in Naming of Major Sports Stadium

Served as IP counsel to a retirement plan provider related to their involvement in purchasing naming rights to a major U.S. sports stadium. Provided counsel on and filed for trademark protection of names and logos following multi-year deal.

Substantial ITC Settlement for Semiconductor Client in Section 337 Investigation

Represented semiconductor industry client in in International Trade Commission (ITC) Section 337 investigation directed at the importation of mobile processors incorporating client’s patented integrated circuit features. Three-week trial resulted in substantial settlement to client.

General Exclusion Order (GEO) for Client in ITC Section 337 Investigation

Represented manufacturer of LED light arrays used in photography and video studios in Section 337 investigation directed at the importation of camera- and tripod-mounted LED arrays sourced from a variety of respondents. Trial resulted in the rare issuance of a general exclusion order (GEO). Worked with U.S. Customs officials to enforce GEO and seize infringing articles at ports of entry.

Favorable ITC Settlement for Designer, Manufacturer in Section 337 Investigation

Represented designer and manufacturer of digital microphone and noise-reduction products used in voice-driven applications including in ITC Section 337 investigation directed at the importation of devices incorporating directional microphone arrays and associated software. Resolved matter on the eve of trial with favorable settlement to client.

Representation of Largest Publicly Traded Private Equity Firm in the U.S. in IP Portfolio Evaluation

Represented the largest U.S. publicly traded private equity firm and other investors in evaluating and securing intellectual property portfolios for acquisitions and investments in companies operating in the energy and technology industries.

Acquisition of Online Apparel Ecommerce Business, Related IP Assets

Represented an investment firm client in the acquisition at auction of an online specialty retailer’s ecommerce business and related intellectual property assets, including trademarks and domain names, as well as merchandise and other assets. Transaction included negotiating asset purchase agreement, participating in bankruptcy negotiations, review of IP contracts, negotiating of loan document, conducting diligence of IP, as well as transition agreement for continued operation of ecommerce websites and onboarding of IP portfolio.

Intellectual Property Litigation Dispute

Advised a grand slam tennis club on the protection and enforcement of its intellectual property rights following the advertisement and sale of a branded champagne using the club’s intellectual property. 

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Worldwide
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Boston, MA
800 Boylston St.
30th Floor
Boston, MA 02199
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Boston, Massachusetts
Denver, CO
4643 S. Ulster St.
Suite 800
Denver, CO 80237
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Denver, Colorado
Dublin, Ireland
Fitzwilliam Hall, Fitzwilliam Place
Dublin 2, Ireland
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Edwardsville, IL
115 N. Second St.
Edwardsville, IL 62025
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Edwardsville, Illinois
Jefferson City, MO
101 E. High St.
First Floor
Jefferson City, MO 65101
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Jefferson City, Missouri
Kansas City, MO
2345 Grand Blvd.
Suite 1500
Kansas City, MO 64108
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Kansas City, Missouri
Las Vegas, NV
1980 Festival Plaza Drive, Suite 750
One Summerlin
Las Vegas, NV 89135
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Las Vegas, Nevada
London, England
Royal College of Surgeons of England
38-43 Lincoln’s Inn Fields
London, WC2A 3PE
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Miami, FL
355 Alhambra Circle
Suite 1250
Coral Gables, FL 33134
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New York, NY
7 Times Square, 44th Floor
New York, NY 10036
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Philadelphia, PA
2005 Market Street
29th Floor, One Commerce Square
Philadelphia, PA 19103
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Philadelphia, Pennsylvania
Princeton, NJ
100 Overlook Center
Second Floor
Princeton, NJ 08540
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Princeton, New Jersey
Salt Lake City, UT
201 South Main Street
Suite 750
Salt Lake City, UT 84111
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Salt Lake City, Utah
St. Louis, MO
7700 Forsyth Blvd.
Suite 1800
St. Louis, MO 63105
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St. Louis, Missouri
Washington, D.C.
1050 Connecticut Avenue NW
Suite 500
Washington, DC 20036
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Wilmington, DE
1007 North Market Street
Wilmington, DE 19801
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Wilmington, Delaware